Ex Parte Peña et al

Patent Trial and Appeal Board

Feb 28, 2017

13440568 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/440,568 04/05/2012 Erich Jose Martino Pena 1004289.697US 9462
10928 7590 03/02/2017
T nrke T nrH T T P
EXAMINER
IP Docket Department
3 World Financial Center
CHEN, YAHAO
New York, NY 10281-2101 ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
03/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptopatentcommunication @ lockelord. com
O W alker @ lockelord .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERICH JOSE MARTINO PENA, JOSEPH PHILLIPS,
NICOLA PLAISANT, and MATT TURNBULL
Appeal 2016-004403
Application 13/440,568
Technology Center 2100
Before JEAN R. HOMERE, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—3 and 5—21, which constitute all of the pending claims. App. Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Nokia Technologies Oy.
App. Br. 1.
Appeal 2016-004403
Application 13/440,568
Introduction
Appellants state their “disclosure relates to the field of the
organisation of user event content associated with a plurality of user
applications.” Spec. 1:5-6 (Technical Field). Claim 1 is representative:
1. An apparatus comprising:
at least one processor; and
at least one memory including computer program code,
the at least one memory and the computer program code
configured to, with the at least one processor, cause the
apparatus to perform at least the following:
enable the creation of a plurality of discrete journals,
each discrete journal comprising time-stamped user event
content taken from a plurality of user applications, the discrete
journal relating to a different respective discrete journal
timeframe and wherein the time-stamped user event content has
time-stamps within the respective discrete journal timeframe,
wherein the creation of at least one of the discrete journals is on
receipt of an indication of a future discrete journal timeframe,
the future discrete journal timeframe starting in the future with
respect to the time at which the indication is received; and
enable display of the created plurality of discrete journals
associated with a timeline, the timeline corresponding to a time
period which includes the discrete journal timeframes of the
created plurality of discrete journals.
App. Br. 21 (Claims App’x).
References and Rejections
Claims 1—3, 5—8, and 11—21 stand rejected as unpatentable under 35
U.S.C. § 103(a) over Bennett (US 2009/0204899 Al; Aug. 13, 2009), Scott
(US 2007/0099657 Al; May 3, 2007), Jackson (US 2002/0198890 Al; Dec.
26, 2002), and Williams (US 2006/0156245 Al; July 13, 2006). Final Act.
3-12.
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Application 13/440,568
Claim 9 stands rejected as unpatentable under 35 U.S.C. § 103(a) over
Bennett, Scott, Jackson, Williams, and Smith (2012/0124125 Al; May 17,
2012). Final Act. 13.
Claim 10 stands rejected as unpatentable under 35 U.S.C. § 103(a)
over Bennett, Scott, Jackson, Williams, and Zhang (US 2012/0203794 Al;
Aug. 9, 2012). Final Act. 13—14.
ISSUE
Based on Appellants’ arguments, the dispositive issue before us is
whether the Examiner errs in rejecting claim 1 as being unpatentable over
the combination of Bennett, Scott, Jackson, and Williams. See App. Br. 10-
19.2
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments. We disagree with Appellants’ conclusions. We adopt the
Examiner’s findings and reasons as set forth in the Final Rejection from
which this appeal is taken and as set forth in the Answer. Ans. 2—27. We
highlight the following for emphasis.
Bennett
Appellants argue the Examiner errs in rejecting claim 1 because
“Bennett does not disclose ‘display of the created plurality of discrete
journals associated with a timeline’, as recited in claim 1.” App. Br. 12.
This is unpersuasive, because the Examiner relies on Williams for teaching
this claim requirement. See Final Act. 4—5.
2 Appellants argue that claims 2, 3, and 5—21 are patentable for the same
reasons as representative claim 1. See App Br. 19.
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Appellants also argue an ordinarily skilled artisan “would have had to
go against the teaching of Bennett” to arrive at claim 1 because Bennett
purportedly teaches displaying “with no association with a timeline.” App.
Br. 12. We find this argument unpersuasive. Appellants do not explain
how or why adding a timeline display as taught by Williams contravenes
Bennett’s teaching. Mere silence with regard to display using a timeline is
not a teaching against such a feature. Instead, we find the Examiner has
sufficiently articulated a rational basis as to why one of ordinary skill would
have been motivated to combine the timeline from Williams with slide show
display of Bennett. See Final Act. 5, Ans. 22—23. Further, Appellants
provide no evidence or argument that adding timeline displays as taught by
Williams to the teachings of Bennett was “uniquely challenging or difficult
for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher -
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Inti Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007)).
Appellants further argue “Bennett also does not disclose creation of a
journal ‘on receipt of an indication of a future discrete journal timeframe
starting in the future with respect to the time at which the indication is
received’, as recited in claim 1, or indeed any such ‘future discrete journal
timeframeApp. Br. 12. This argument is unpersuasive, because the
Examiner relies on Scott for teaching a discrete journal timeframe, Jackson
for teaching a future discrete journal, and the combination of Scott and
Jackson, in view of Bennett, for teaching a “future discrete journal
timeframe.” Final Act. 4. One cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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Scott
Appellants argue the Examiner errs because:
Scott does not disclose creation of a journal “on receipt of an
indication of a future discrete journal timeframe starting in the
future with respect to the time at which the indication is
received", as recited in claim 1, or indeed any such ‘ future
discrete journal timeframeScott does not teach or suggest
that a timeframe may start in the future.
App. Br. 12—13. This argument is unpersuasive. Whether Scott teaches or
suggests that a timeframe may start in the future is irrelevant because the
Examiner does not rely on Scott for this requirement. As discussed supra
and infra, the Examiner specifically relies on the combined teachings of
Jackson, Scott, and Bennett, for the “future discrete journal timeframe”
requirement. Final Act. 4. See In re Keller, 642 F.2d at 425.
Appellants also argue the Examiner errs because “Scott does not
disclose a ‘plurality of discrete journals'1 relating to ‘different respective
discrete journal time frames', or ‘display of the created plurality of discrete
journals associated with a timeline.'"'’ App. Br. 13. This is unpersuasive,
because the Examiner relies on Bennett for teaching a “plurality of discrete
journals” and “different respective discrete journal timeframes,” and on
Williams for display “associated with a timeline.” Final Act. 3—5.
Jackson
Appellants argue that Jackson provides “no suggestion that an
electronic journal may relate to a ‘discrete timeframe,"'’ and, accordingly, an
ordinarily skilled artisan “would have received no teaching relating to a
future discrete journal timeframe', not least because a ‘discrete journal
timeframe' is not taught or suggested by Jackson.” App. Br. 13 (citing
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Jackson Abstract, 118,18); see also id. at 14—15. The Examiner answers,
and we agree, that it is the combination of Scott and Jackson that teaches the
recited “future discrete journal timeframe.” Ans. 19—22 (further finding that
Scott suggests future timeframes and that Jackson teaches the recited “future
discrete journals”). Appellants’ argument of Examiner error based on
Jackson not teaching a “discrete timeframe” is unpersuasive because, as
discussed supra, the Examiner relies on Jackson for teaching a future
discrete journal, Scott for teaching a discrete journal timeframe, and the
combination of Jackson and Scott, in view of Bennett for the recited future
discrete journal timeframe. See In re Keller, 642 F.2d at 425.
Appellants further argue “Jackson does not relate to creation or
display of a plurality of discrete journals” and therefore is not relevant to
claim 1. App. Br. 15. This argument is unpersuasive. The Examiner relies
on Bennett for teaching the recited “creation of a plurality of discrete
journals” and Williams for teaching the recited “display of the created
plurality of discrete journals.” See Final Act. 3—5.
Appellants further contend in reply that an ordinarily skilled artisan
would not have considered applying the “memory cue”/”time-based cue”
from Jackson to the journal creation of Scott. Reply Br. 3. Appellants argue
an ordinarily skilled artisan “would not have read the teachings of Jackson
concerning a memory cue for a journal entry in the future from Jackson, and
construe Jackson to therefore teach or suggest creation of a future journal.”
Id. at 4. We find this argument unpersuasive because the Examiner relies on
Scott for creation of discrete journals on receipt of an indication of a discrete
journal timeframe, and on Jackson’s teachings only for the requirement that
the discrete journal timeframe is a future discrete journal timeframe. Final
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Act. 4—5. Each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Williams
Regarding Williams, Appellants argue the reference “does not
disclose discrete bands {''discrete journals’ in claim 1) relating to ‘discrete
timeframes, ’” and that to combine the teachings of Williams with Bennett,
Scott, and Jackson, it would be necessary for an ordinarily skilled artisan “to
go against the teaching[s]” both of Bennett and of Scott. App. Br. 15 (citing
Williams Abstract, Fig. 4, || 16, 59). The Examiner answers by finding the
“time-line based navigation tool” of Williams “provides a ‘more rich and
meaningful user experience’ (e.g., [0005]),” and there would have been
ample motivation for an ordinarily skilled artisan to combine this teaching
with Bennett’s teachings for displaying mobile journals. Ans. 22—23 (citing
Williams Abstract, Figs. 4, 9, 14, || 5, 11, 58, 73—74, 81).
We agree with the Examiner that combining teachings from Williams
with those of Bennett and Scott does not go against the teachings of either
Bennett or Scott. See Final Act. 3—5, Ans. 15—24. Regarding Appellants’
observation that Williams does not disclose “discrete timeframes,” we note
the Examiner primarily relies on Scott for teaching the recited timeframes
for discrete journals, and on Williams for enabling display associated with a
timeline. Final Act. 4. It is not Williams in isolation that teaches every
detail of the “enable display . . . associated with a timeline” requirements for
which the Examiner cites it, rather it is the teachings of Williams in view of
and in combination with the teachings of Bennett, Scott, and Jackson. See In
re Merck, 800 F.2d at 1097.
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The Combination of Bennett, Scott, Jackson, and Williams
Appellants argue:
As none of the cited references teach or suggest creation
of a journal “on receipt of an indication of a future discrete
journal timeframe starting in the future with respect to the time
at which the indication is received", as recited in claim 1, or
indeed any ‘future discrete journal timeframe", Appellant
respectfully submits that the references in combination likewise
cannot teach this feature.
App. Br. 15. In support of this argument, Appellants posit various outcomes
from an ordinarily skilled artisan combining the teachings of Bennett, Scott,
and Jackson. Id. at 16—18. Appellants contend neither Scott nor Jackson can
teach the future discrete journal timeframe because “Scott can only relate to
current or past timeframes” and “paragraph [0026] of Jackson discusses
memory cues for activation at a later time; however, while the journal entry
may take place in the future, the actual journal already exists and has a
timeframe which must be at least partially in the past.” Reply Br. 5—6.
This argument, based on Appellants’ interpretation of how an
ordinarily skilled artisan would have combined the teachings of the cited
references, does not persuasively rebut the Examiner’s findings. The
Examiner finds, and we agree, that Scott teaches creating a journal based on
an indication of a journal timeframe, that Jackson teaches journals to contain
future events, and that the combination of Scott and Jackson, in view of
Bennett, teaches or suggests creating a journal with a future journal
timeframe. Final Act. 3—5. Appellants do not point to any evidence of
record that the combination would be “uniquely challenging or difficult for
one of ordinary skill in the art” or “represented an unobvious step over the
prior art.” Leapfrog, 485 F.3d atl 162 (citing KSR 550 U.S. at 418—19). Nor
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have Appellants provided evidence of secondary considerations which our
reviewing court guides “operates as a beneficial check on hindsight.”
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013). The Examiner’s findings are reasonable because the
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle” because the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420-21. We are persuaded
the claimed subject matter exemplifies the principle that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Conclusion
As discussed supra, Appellants do not persuade us of error in the
Examiner’s findings and conclusions in the rejection of claim 1. Appellants
provide no arguments separate from claim 1 for the patentability of claims 2,
3, and 5—21. App. Br. 19. Accordingly, we sustain the rejection of claims
1—3 and 5—21.
DECISION
For the above reasons, we affirm the rejection of claims 1—3 and 5—21.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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